(74) Issuance of a Patent to an Assignee
The purpose of this notice is to clarify the procedures to have
a patent issue to an assignee. See 37 CFR 3.81 and Manual of Patent
Examining Procedure 307.
Section 3.81(a) permits a patent to isssue to an assignee, provided
that at the time the issue fee is paid, the assignment has been submitted
for recordation and the name of the assignee is provided. The name of the
assignee is usually provided in item 5 of the Issue Fee Transmittal form
(PTOL-85B).
Section 3.81(b) permits a patent to issue to an assignee when the
assignment is submitted for recording after the date of payment of the
issue fee, but prior to issuance of the patent, provided a petition and
fee are filed requesting that the patent issue to the newly recorded
assignee.
When the correct name of the assignee was not provided in accordance
with either section 3.81(a) or (b) (i.e., either no name or an incorrect
name was provided in item 5 of the Issue Fee Transmittal when the
assignment had been recorded or submitted for recordation at the time the
issue fee was paid, or an incorrect name was provided in the petition
required by section 3.81(b) when the assignment is submitted for recording
after the date of payment of the issue fee, but prior to issuance of the
patent), a correction can be made by filing a petition under 37 CFR 1.183
requesting that the requirements of 37 CFR 3.871 be waived. This procedure
is required at any time after the issue fee is paid, including after
issuance of the patent. A petition under 37 CFR 1.183 should include: (1)
the petition fee set forth in 37 CFR 1.17(h) (currently $130); (2) the
correct name of the assignee; and (3) the reel and frame number where the
assignment is recorded or proof of the date the assignment was submitted
for recordation.
If the petition under 37 CFR 1.183 is filed and granted prior to
issuance of the patent, the patent will either: (1) be printed with the
correct assignee's name; or (2) be printed without the correct assignee's
name. In the latter case, patentee would be entitled to a certificate of
correction under 37 CFR 1.322 to correct an Office mistake in not
correctly printing the assignee's name on the patent.
If the petition under 37 CFR 1.183 is filed and/or granted after
issuance of the patent, the patent would be printed without the correct
assignee's name. However, if the petition is granted, patentee would be
entitled to a certificate of correction under 37 CFR 1.323 due to the
mistake in not complying with 37 CFR 3.81.
March 16, 1994 CHARLES E. VAN HORN
Patent Policy and Projects Administrator
Office of the Assistant Commissioner for Patents
[1161 OG 293]